EU General Court Provides Insight on Protection Afforded to Descriptive Marks

(This article was written for INTA Bulletin. The original article was published on January 15, 2016 and can be viewed here.)

The General Court of the EU (EGC) has dismissed an appeal relating to opposition proceedings where the signs at issue both incorporated the identical and allegedly descriptive term BAMBINO, but also included additional figurative elements. (Westermann Lernspielverlag GmbH v. OHIM and Diset, SA T-333/13, July 15, 2015)

The marks are reproduced below:

Earlier CTM Registration No. 3915121 Later CTM Application No. 9080359

The applicant, Westermann Lernspielverlag GmbH, had filed a Community trade mark (CTM) application for the BAMBINO LÜK mark (see figure above on the right) for goods and services in Classes 9, 16 and 28. The opponent, Diset, SA, filed an opposition on the basis of its earlier BAMBINO mark (see figure above on the left), which was registered for goods and services in Classes 16, 28 and 41. The opposition was partly upheld with respect to most of the goods but was rejected for some goods deemed dissimilar. The decision was appealed by the applicant to the Board of Appeal and its decision was subsequently appealed to the EGC.

The applicant argued that the word element “Bambino” in the earlier mark lacked distinctive character and was descriptive of the goods covered by the registration as it meant “baby” or “young child” and would be known in the UK and throughout Europe to designate toys and other goods and services for babies and young children. It also claimed that the descriptive character of the element “bambino” was emphasized in the earlier mark by the presence of the graphic of the child. The applicant also stated that the LÜK element in its applied-for mark and the graphic of the child in the earlier mark helped to distinguish the marks. The applicant argued that, given the descriptiveness of the term “Bambino,” the consumer would pay more attention to the graphic of the child in the earlier mark and to the LÜK element in the applied-for mark.

However, the EGC disagreed with the applicant’s argument that the earlier mark had a weak distinctive character and essentially pointed out that there was no need to examine the inherent registrability of a mark in opposition proceedings as the fact that it was registered meant that it had at least a minimum level of inherent distinctiveness. The EGC also stated that even if the distinctive character of an earlier mark is weak, this does not preclude a finding of a likelihood of confusion, as the distinctive character of the earlier mark is only one factor when assessing likelihood of confusion.

According to OHIM’s “Common Communication on the Common Practice of Relative Grounds of Refusal—Likelihood of Confusion (impact of non-distinctive/weak components),” if there is an element common to both marks, but that element has a low degree of distinctiveness, then that common element will not on its own lead to a likelihood of confusion. However, the Common Communication also indicated there may be a likelihood of confusion if the other components of the marks have a lower (or equally low) degree of distinctiveness or are of insignificant visual impact and the overall impression of the marks is similar.

It can be seen that the EGC’s decision is in line with the criteria set out in the Common Communication when assessing the likelihood of confusion between the BAMBINO marks. The ECG agreed with the Board of Appeal’s finding that the term “bambino” was dominant in both marks, and even if this term was of weak distinctive character (which the EGC did not believe), the additional elements present in both marks did not outweigh the visual, phonetic and conceptual similarity arising from the common element “bambino.” Furthermore, the EGC held that the term “bambino” did not have any meaning for the general public in several EU countries and that contrary to the applicant’s claim, it was not established that the term “bambino” is known by the English-speaking public in general. Consequently, the EGC dismissed the appeal.

This decision is an important reminder to trademark owners and practitioners that no matter how weak the distinctive character of a trademark appears to be, if the dominant element of the earlier mark is reproduced dominantly in a later mark, and any additional elements are of little distinguishing value, then that earlier registration can be used to enforce the proprietor’s trademark rights. If a trademark proceeds to registration, then an inherent level of distinctiveness must be assumed and the rights afforded to the trademark owner should be used accordingly.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

To learn more about CTM registrations and other issues, please contact Mary Bleahene, European Trade Mark Attorney, or David Flynn, Associate.